Complainant is Parallels International GMBH of Bellevue, Washington, United States of America (“United States”), represented by DLA Piper US LLP, United States.
Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States / Krutika V Parikh of New York, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 3, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2018. The Center received an informal communication from Respondent on August 6, 2018. Respondent did not submit a formal response. Accordingly, the Center notified the Parties on August 27, 2018 that it would proceed to panel appointment.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on September 12, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant, Parallels International GMBH, is a server automation and virtualization software company. Complainant is a provider of software products under the name and mark PARALLELS that allows users to access files and applications across different device platforms. Complainant is the owner of multiple United States trademark registrations that consist of the PARALLELS mark in connection with its software products and services, including, but not limited to, PARALLELS (Registration No. 3109113) which issued to registration on June 27, 2006, PARALLELS ACCESS (Registration No. 4791174) which issued to registration on August 11, 2015, PARALLELS DESKTOP (Registration No. 77296207) which issued to registration on May 20, 2008, and PARALLELS RAS (Registration No. 86913969) which was filed on February 19, 2016. Complainant also owns and uses the domain name through which it sells and advertises its software products and related services.
Respondent is based in the state of New York, United States, and appears to be connected to an entity by the name of Intelli Atlas, Inc. (“Intelli”). Respondent registered the disputed domain name on July 22, 2016. Respondent has used the disputed domain name in connection with a website through which Respondent has offered technical support services for Complainant’s PARALLELS software products.
On September 18, 2017, Complainant sent a demand letter to Intelli, which Complainant believed was the operator of the website based on Intelli’s name appearing at the bottom of the website at the disputed domain name. On March 2, 2018, Complainant’s counsel sent a second demand letter to Intelli concerning the disputed domain name and associated website. On the same day, a representative of Intelli responded and simply advised “we are shutting down.” The website at the disputed domain name, however, remained posted and Complainant’s counsel sent a further demand letter on March 15, 2018. Respondent did not respond to that letter. The website at the disputed domain at some point thereafter was removed, and the disputed domain name currently does not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainant asserts that it adopted and has used the PARALLELS mark in the United States since 2005 in connection with its software and related services. Complainant further asserts that the PARALLELS mark has developed a strong reputation in the United States in connection with Complainant’s software products and services.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s PARALLELS mark as Respondent is using the disputed domain name to divert Internet users by creating a likelihood of confusion with Complainant’s PARALLELS mark. Complainant further argues that the addition of the word “help” and the general Top Level Domain (“gTLD”) extension “.support” do not dispel the likelihood of confusion as they do not distinguish the disputed domain name from Complainant’s PARALLELS mark. Complainant maintains that because the website at the disputed domain name prominently features references to the PARALLELS mark and offers technical support services, consumers will be confused into believing that the disputed domain name and associated website are an official or endorsed service from Complainant. In that regard, Complainant maintains that it has received reports from consumers that were diverted to Respondent’s website at the disputed domain name mistakenly believing they were accessing an official site of Complainant for technical support services.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has no relationship with Complainant, (ii) has received no authorization from Complainant to use the PARALLELS mark, (iii) is not commonly known by the disputed domain name, and (iv) is using the disputed domain name to misleadingly divert consumers seeking legitimate technology information and support from Complainant to Respondent’s website. Complainant further contends that Respondent’s actions are not legitimate given that Respondent repeatedly featured the PARALLELS mark on its website at the disputed domain name to suggest a connection with Complainant, did not use any other independent branding on the website at the disputed domain name to dispel the confusion, and simply included inconspicuous disclaimers at the bottom of the website that consisted of vague wording that did not sufficiently disclaim Respondent’s relationship with Complainant.
Lastly, Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith, as Respondent has used the disputed domain name to misleadingly attract consumers to Respondent’s website at the disputed domain name for purposes of selling technical support services for Complainant’s PARALLELS software products. Complainant maintains that Respondent has sought to pass itself off as an official or authorized website providing technical support services for Complainant’s PARALLELS software products, when such is not the case. Complainant further contends that Respondent has acted in bad faith by failing to shut down its website at the disputed domain name, as represented by Respondent, following the receipt of demand letters from Complainant, and by using a privacy service to conceal its identity. Finally, Complainant argues that Respondent’s bad faith is further established by Respondent’s registration and use of other domain names based on the brands of other parties, such as Microsoft and Hewlett Packard, to misleadingly attract consumers to websites to likewise offer technical support services for a variety of other products. B. Respondent
Respondent did not reply to the Complainant’s contentions. On August 6, 2018, however, Respondent sent the Center an email advising that “we decided to close the website but will not transfer the domain name to anyone. we will sell this domain in future. we are closing support business for Parallels products. Thank you.” 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the PARALLELS mark in connection with its software products and services. Complainant has also provided evidence that the PARALLELS mark has been registered in the United States, where Respondent is located, well before Respondent registered the disputed domain name.
With Complainant’s rights in the PARALLELS mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD such as “.support”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s PARALLELS mark as it incorporates the identical PARALLELS mark in its entirety at the head of the disputed domain name. The addition of the word “help” does not distinguish the disputed domain name from Complainant’s PARALLELS mark and in fact may increase the confusion by suggesting that the disputed domain name is related to Complainant and/or Complainant’s PARALLELS products and services, particularly as the word “help,” in connection with the gTLD extension “.support,” may be seen by consumers as suggesting technical support services for products under the PARALLELS mark.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s PARALLELS mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website that promotes technical support services for Complainant’s PARALLELS products. There is no evidence or indication that Respondent has used the disputed domain name and associated website to offer any technical support services for software products other than Complainant’s PARALLELS software products. Thus, on its face it would appear that Respondent, while not an authorized provider of support services for PARALLELS software products, could have a legitimate interest in the disputed domain name under the “Oki Data test” adopted by numerous UDRP panels. See Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903; see alsoWIPO Overview 3.0 at section 2.8.
However, while offering bona fide technical support services for PARALLELS software products could be seen as being a legitimate interest or use, Respondent here took the extra step of registering a domain name that on its face suggests a connection to Complainant, or which could be seen as an official domain name of Complainant for support services, and then using such with a website that suggested a connection to Complainant and/or which made it appear that the website was an official or authorized website for technical support services for Complainant’s PARALLELS products. The evidence submitted by Complainant, none of which is contested by Respondent, shows that the website Respondent placed at the disputed domain name repeatedly and prominently featured the PARALLELS mark with legends such as “PARALLELS® Support,” “Technical Support for PARALLELS®,” “PARALLELS® Support Services,” “Parallels Desktop Phone Includes,” “24x7 Parallels Technical Support Helpline,” and “Support and Help on Parallels Problems.” Respondent also included a telephone number to call with the legend “PARALLELS 800-961-1983” and a copyright notice that read “Copyright©2016 - Parallels® Support, Parallels Help 800-961-1983.” Notably, the website at the disputed domain name did not include any branding for Respondent’s Intelli company name or for any other name or brand. Respondent merely included disclaimers in small lettering in the website at the disputed domain name that did not make it clear that Respondent had no affiliation with Complainant or that Respondent was not an authorized provider of Complainant for technical support services for PARALLELS software.1
Such actions by Respondent, in their totality, appear to have been designed to suggest that Respondent’s website at the disputed domain name is affiliated with, connected to or authorized by Complainant, when such is not the case. Indeed, it appears from Complainant’s evidence, which is not contested by Respondent, that Complainant received reports that some consumers had been diverted to Respondent’s website at the disputed domain name believing it was an official website of Complainant for technical support services for PARALLELS software. Simply put, a consumer visiting Respondent’s website at the disputed domain name would likely believe that the domain name and website are somehow connected to or authorized by Complainant, given (i) the prominent use of PARALLELS in the disputed domain name, (ii) the numerous PARALLELS indicia and references used by Respondent throughout the website at the disputed domain name, (iii) the lack of anything material or prominent on the website dispelling the connection between Respondent and Complainant and (iv) the lack of anything prominent disclosing Respondent’s identity on the website at the disputed domain name. Thus while Respondent may have a legitimate basis for offering technical support services for PARALLELS software, it is not legitimate for Respondent to essentially impersonate or suggest some form of connection, sponsorship or endorsement by Complainant for purposes of selling technical support services to consumers. Respondent is not connected to Complainant and taking measures to misleadingly imply an affiliation with Complainant is not a legitimate or fair use even under the “Oki Data Test.” WIPO Overview 3.0 at sections 2.5.1 and 2.8.2.
In addition, Respondent’s actions after receiving demand letters from Complainant further underscore Respondent’s lack of a legitimate interest. Respondent not only failed to address or correct the concerns raised by Complainant in its demand letters, but instead continued operating its website in much the same way, despite advising that it was shutting down the website. Such actions simply do not demonstrate above board actions by a party seeking to legitimately offer technical support services.
Given that Complainant has established with sufficient evidence that it owns rights in the PARALLELS mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant’s PARALLELS mark with the word “help” and the gTLD “.support,” which in combination is likely to be viewed by consumers as linked to Complainant and/or to a website that is authorized or endorsed by Complainant to provide technical support services for Complainant’s PARALLELS software products. This is particularly so given that Respondent, as noted above, designed a website that appeared to be connected to Complainant or to be an official or authorized website of Complainant for technical support services for PARALLELS software. It is again worth noting that Respondent’s use of small and vague disclaimers on the website at the disputed domain name, when seen in the context of Respondent’s repeated uses of the PARALLELS mark, likely did not dispel consumer confusion as there was no information provided about Respondent and no statement that Respondent had no affiliation with or endorsement from Complainant. Simply put, Respondent’s actions make it more likely than not that Respondent opportunistically registered and used the disputed domain name, which is based on Complainant’s PARALLELS mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. See WIPO Overview 3.0, section 3.1.4 (and cases cited therein).
That Respondent registered and used the disputed domain name in bad faith is further confirmed by Respondent’s own actions. After receiving demand letters from Complainant, Respondent continued using the disputed domain name in more or less the same confusing manner. In addition, Respondent appears to have registered and is using other domain names based on third party brands, such as Microsoft and Hewlett Packard, for similar profit schemes. Lastly, the Panel notes that Respondent has failed to materially participate in this proceeding and has simply submitted an email that suggests on its face that Respondent wants compensation for the transfer of the disputed domain name. In their totality, such actions and statements further undermine the possibility that Respondent was acting in good faith when Respondent registered and started using the disputed domain name to sell technical support services for Complainant’s PARALLELS software products.
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: September 25, 2018
1 Prior to Complainant’s September 17, 2017 demand letter, the website at the disputed domain name apparently included the Intelli company name at the bottom of the website in a disclaimer in small lettering. That reference was later removed by Respondent and the website exhibit pages provided by Complainant do not show use of the Intelli name.
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